Appeal No. 1996-3860
Application 08/312,819
examiner to make an initial analysis as to what the claimed invention is and a proper
analysis of the claims and prior art as required by Graham, supra. See also MPEP
706.02(j) wherein it states that:
...[A]fter indicating that the rejection is under 35 U.S.C. § 103, the examiner
should set forth in the Office action (1) the relevant teachings of the prior art
relied upon, preferably with reference to the relevant column or page
number(s) and line number(s) where appropriate, (2) the difference or
differences in the claim over the applied reference(s), (3) the proposed
modification of the applied reference(s) necessary to arrive at the claimed
subject matter, and (4) an explanation why one of ordinary skill in the art at
the time the invention was made would have been motivated to make the
proposed modification.
As noted previously, appellants, in their brief, have pointed out a number of
differences between the claimed process and the Sauter process. The examiner has not
disputed that these differences exist. Rather, as explained above, the examiner curtly
dismissed any differences. This is error. As part of the analysis under 35 U.S.C. ' 103, it
is the examiner’s burden to consider whether the differences between the subject matter
sought to be patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person having ordinary skill in
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